Reinsdorf v Skechers Us A
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O
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
RICHARD REINSDORF, anindividual,
Plaintiff,
v.
SKECHERS U.S.A, a Delawarecorporation; SKECHERSU.S.A.., INC., II, aDelaware corporation,
Defendants.___________________________
))))))))))))
))
Case No. CV 10-07181 DDP (SSx)
ORDER DENYING DEFENDANTS MOTIONFOR SUMMARY JUDGMENT AND GRANTINGDEFENDANTS MOTIONS IN LIMINE
[Dkt. Nos. 124, 125, 127, 139,185]
Presently before the court is Defendant Skechers U.S.A.
(Skechers) Motion for Summary Judgment. Having considered the
submissions of the parties and heard oral argument, the court
grants the motion in part, denies the motion in part, and adopts
the following order.
I. Background
As explained in this courts earlier order denying Defendants
Motion to dismiss, Skechers is a shoe company. (Declaration of
Robert Welsh in support of Motion (Welsh Dec.) Ex.19.) Beginning
in 2005, Skechers hired Plaintiff Richard Reinsdorf (Reinsdorf),
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a photographer, to conduct several photo shoots. (Undisputed Fact
6). Between 2006 and 2009, Skechers engaged Reinsdorf to conduct
five photo shoots at issue here, in connection with Skecherss
marketing efforts. (Complaint 14-15, 18-19, 22-23, 25, 29-30.)
Prior to each photo shoot, Skechers explained to Reinsdorf the type
of images Skechers hoped to capture. (Welsh Dec., Ex. 44
10,12.) These explanations included storyboards and photographic
examples, as well as drawings depicting particular poses for
Skechers selected models. (Id. 12, 14.) During the shoots,
Reinsdorf posed models, arranged lighting and props, and otherwise
directed the photography sessions. (Compl. 23.) Reinsdorf
delivered raw photographs (the photographs) to Skechers at the
conclusion of each photo shoot. (UF 22.)
Upon receiving the photographs from Reinsdorf, Skechers
proceeded to modify the images for use in Skechers advertisements.
(Welsh Dec., Ex. 44 17.) The alterations varied with each image,
and ranged from slight modifications in models skin tone to the
substitution of models body parts and the addition of substantial
graphic effects. (Id. 17, 21.) These enhanced images were then
used in Skechers advertisements (the advertisements). (Id.
16.) No raw, unaltered photograph was ever incorporated into a
finished advertisement. (Id.)
Reinsdorf submitted invoices to Skechers for his services, and
contends that he granted Skechers a limited license to use the
photographs. (Compl. 442; Statement of Genuine Issues 16-20,
22). Reinsdorf brought suit in this court alleging copyright
infringement, as well as state law causes of action for breach of
contract and unfair competition, alleging that Skechers utilized
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his copyrighted images as part of Skechers marketing efforts in
violation of the temporal and geographic limits of the use
licenses. (Compl. 6.) Skechers now moves for summary judgment.
II. Legal Standard
Summary judgment is appropriate where the pleadings,
depositions, answers to interrogatories, and admissions on file,
together with the affidavits, if any, show that there is no
genuine dispute as to any material fact and the movant is entitled
to judgment as a matter of law. Fed. R. Civ. P. 56(a). A party
seeking summary judgment bears the initial burden of informing the
court of the basis for its motion and of identifying those portions
of the pleadings and discovery responses that demonstrate the
absence of a genuine issue of material fact. See Celotex Corp. v.
Catrett, 477 U.S. 317, 323 (1986). All reasonable inferences from
the evidence must be drawn in favor of the nonmoving party. See
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 242 (1986).
If the moving party does not bear the burden of proof at trial, it
is entitled to summary judgment if it can demonstrate that there
is an absence of evidence to support the nonmoving partys case.
Celotex, 477 U.S. at 323.
Once the moving party meets its burden, the burden shifts to
the nonmoving party opposing the motion, who must set forth
specific facts showing that there is a genuine issue for trial.
Anderson, 477 U.S. at 256. Summary judgment is warranted if a
party fails to make a showing sufficient to establish the
existence of an element essential to that partys case, and on
which that party will bear the burden of proof at trial. Celotex,
477 U.S. at 322. A genuine issue exists if the evidence is such
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contributions be merged into inseparable or interdependent parts
of a unitary whole. Richlin v. Metro-Goldwyn-Mayer Pictures,
Inc., 531 F.3d 962, 969 (9th Cir. 2008). Co-authors in a joint
work cannot be held liable to one another for infringement of the
copyright in the joint work. Oddo v. Ries, 743 F.2d 630, 632-33
(9th Cir. 1984); Thomson v. Larson, 147 F.3d 195, 199 (2d Cir.
1998).
This court found that the first two factors, authorship and
independently copyrightable contributions, were not at issue. With
respect to authorship, the court expressly declined to determine
whether Reinsdorf was the sole author of the raw photographs
because, even if that were the case, the finished advertisements at
issue here would nevertheless be the product of contributions from
two authors, Reinsdorf (raw photographs) and Skechers (graphical
additions and modifications). (Order at 5 n.3.)
The court focused, therefore, on the third factor necessary to
establish the existence of a joint work: the intent of the parties
to merge independent contributions into a unitary whole. After
concluding that the record did not establish that Reinsdorf
intended his raw photographs to be merged into a finished
advertisement, the court denied Skechers motion. (Id. at 7.)
Reinsdorf did not move for reconsideration or otherwise challenge
the courts conclusions.
Now, after the conclusion of discovery, Skechers seeks summary
judgment on the joint work issue. Skechers argues that the fully-
developed record now demonstrates that Reinsdorf did indeed intend
for his raw photographs to be merged with Skechers graphical
enhancements into a finalized marketing image.
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Reinsdorfs opposition to the motion does not dispute
Skechers contentions regarding his intent with respect to the
synthesis of the parties independent contributions. Instead,
Reinsdorf now challenges the second, authorship element of the
joint work test, arguing that the marketing images at issue here
are not the creations of two or more authors. (Opp. at 8-16.)
B. Joint Authorship
This case presents an unusual set of circumstances. In most
cases, a plaintiff seeks to establish that he is the sole author of
a work, see, e.g., Morrill, 157 F. Supp. 2d at 1122, or at least a
co-author of a work, see, e.g., Aalmuhammed v. Lee, 202 F.3d 1227,
1230 (9th Cir. 2000), so as to enjoy the benefits of copyright
ownership (or co-ownership). Here, in contrast, Plaintiff
Reinsdorf seeks to disavow any authorship role in the finished
marketing works.
Reinsdorfs position is understandable in light of the fact
that, as explained above, a co-author in a joint work cannot be
liable to another co-owner for infringement of the copyright in
that work. Oddo, 743 F.2d at 632-33 (9th Cir. 1984). Furthermore,
and perhaps more importantly, [i]n a joint work, . . . each author
obtains an undivided ownership in the whole of the joint work,
including any portion thereof. Consequently, one joint author
thereby obtains the right to use or license that portion of the
joint work that was the sole creation of the other joint author.
1 Nimmer on Copyright 6.06[A]. Thus, to bring a successful
infringement claim against Skechers, Reinsdorf must establish that
his role in the creation of the final marketing images did not rise
to the level of authorship.
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The criteria for joint authorship include whether 1) an
alleged author exercises control over a work, serves as the
inventive or master mind, or creates or gives effect to an idea;
2) there exists an objective manifestation of a shared intent to
be coauthors; and 3) the audience appeal turns on both
contributions and the share of each in its success cannot be
appraised. Aalmuhammed, 202 F.3d at 1233-35 (internal quotations
and citations omitted). Due to the variety of creative
relationships to which these factors apply, however, the factors
cannot be reduced to a rigid formula. Id. at 1235.
1. Control
Courts in this district have found the joint control criterion
satisfied where both parties had creative control over separate
and indispensable elements of the completed product. Morrill v.
Smashing Pumpkins, 157 F. Supp. 2d 1120, 1124 (C.D. Cal. 2001); see
also Eagle Rock Entmt. Inc. v. Coming Home Prods., Inc., No. CV 3-
571 FMC; 2004 WL 5642002 *13 (C.D. Cal. Sept. 1, 2004). Here, the
parties appear to agree on their respective degrees of control over
the constituent parts of the marketing images. Reinsdorfs
opposition argues that [a]lthough . . . Skechers controlled the
latter half of the creative process here, namely the graphic design
of its marketing images, it exercised little to no control over
Reinsdorfs authorship of his underlying photographs. . . . (Opp.
at 9.) Similarly, Reinsdorf asserts that [j]ust as Skechers had
minimal involvement in Reinsdorfs authorship of his photographs,
[Reinsdorf] likewise did not exercise any supervisory powers over
the design of Skechers marketing images . . . . (Opp. at 11
(internal quotation omitted).) Skechers does not dispute these
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1 It appears that Dr. Luntz did not present either Skecherscomplete advertisements or Reinsdorfs raw photographs to surveyparticipants. (Declaration of Dr. Carol Scott in Support of Motionto Exclude Luntz Report 46.) Dr. Luntz survey was designed totest brand recognition, not to appraise the relative audienceappeal of the various elements in the finished advertisements.
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characterizations. (Reply pp. 7-10.) Thus, as in Morrill and
Eagle Rock Entertainment, each party had exclusive, or near-
exclusive, power over the distinct constituent parts of the unitary
whole. The supervisory or control factor thus weighs in favor
of joint authorship.
2. Audience Appeal
While acknowledging that the audience appeal of the marketing
images could be attributed to both parties contributions,
Reinsdorf argues that the bulk of the images appeal can be
attributed to Reinsdorfs photos, and quantified. Reinsdorf
contends that the relative appeal of the parties separate
contributions can be appraised by a casual comparison of the raw
photographs with the finished images. (Opp. at 17.) From that
basis, Reinsdorf claims, one can fairly easily parse how much of
the audience appeal of the work originates from the various
elements. (Id.) This conclusory assertion notwithstanding, the
only evidence Reinsdorf cites is a survey study by Dr. Frank Lunz.
(Opp. at 17.) Putting aside for the moment Skechers general
objections to Dr. Lunzs opinions, it does not appear that Dr. Lunz
ever compared Reinsdorfs raw photographs to the finished Skechers
advertisements.1 Dr. Luntz survey was designed to test brand
recognition, not to appraise the relative audience appeal of the
various elements in the finished advertisements. It appears that
Dr. Luntz did not present either Skechers complete advertisements
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or Reinsdorfs raw photographs to survey participants.
(Declaration of Dr. Carol Scott in Support of Motion to Exclude
Luntz Report 46.) Without such a comparison, Skechers cannot
credibly argue that the relative audience appeal of the joint
authors contributions has been ascertained, and has failed to
demonstrate that the share of appeal attributable to each element
can be appraised. The audience appeal factor therefore weighs in
favor of joint authorship.
3. Objective Manifestations of Intent
With respect to manifestations of intent, in the absence of a
contract, the inquiry here must focus on the facts. Aalmuhammed,
202 F.3d at 1235. Here, Skechers has presented facts that it
suggests evince the parties intent to be joint authors. Reinsdorf
testified, for example, that his goal was to do a great job,
defined as capturing great moments that Skechers could use in
its advertising and marketing materials. (Reinsdorf Deposition,
Welsh Dec., Ex. 50 at 323:3-6.) Reinsdorf did not expect anything
in particular about the finished images, as [Skechers] could do
whatever, and never did anything creatively with the pictures that
it was not allowed to do. (Reinsdorf Depo. at 314:18-19; 330: 2-
6.) Indeed, Reinsdorf had created similar images, which Skechers
subsequently modified for use in advertising materials not at issue
in this case, for Skechers at an earlier photo shoot, the Michelle
K photo shoot. (Id. at 393.) As with the earlier Michelle K
shoot, Reinsdorf understood that he would be taking photos for
Skechers to use in its catalogs and other marketing materials.
(Id. at 396:10-20.) Reinsdorfs representative, Robert Heller
(Heller), acknowledged in an e-mail to Skechers personnel that
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2 The exhibit in question is not an image of Reinsdorfswebsite, but rather a cease and desist letter sent to Reinsdorf bySkechers, referencing the use of the advertisements. In its reply,Skechers asserts that it sought to prevent Reinsdorf fromdisplaying Skechers trademarks and logos, but not the marketingimages. (Reply at 10.) It is unclear whether the websitedisplayed Skechers logos or trademarks separate and apart from theadvertising images themselves.
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Skechers intended to digitally play with or otherwise decorate
Reinsdorfs raw images. (Ex. 53 to Welsh Dec. at 128.)
Heller also testified that, as Reinsdorfs representative, he
affirmatively wanted Skechers to do something with the images, to
make beautiful ads for their company. (Id. at 130.) Indeed,
Reinsdorf facilitated Skechers manipulation of the images by
suggesting that Skechers use a gray or white background so as to
facilitate digital alteration of Reinsdorfs photos. (Id. at
125:5-7.) When Reinsdorf received samples of the finished
advertisements, his representative did not express shock or
confusion, but rather stated, These came out great! Love the art
direction in the graphics!! (Ex. 24 to Welsh Dec.) Even after
the commencement of this suit, Reinsdorf displayed the finished
marketing images on his personal website.2 (Dec. of William Briggs
in Opposition to Motion, Ex. 46.)
While these actions and communications provide an indication
of Reinsdorfs intent that the parties separate contributions be
merged into a unified whole, that is not the question here.
Rather, the issue is whether the parties manifested an intent to be
co-authors. The difference is important. While intent to merge
separate contributions is a necessary element of a joint work, it
is not equivalent to an intent to be joint authors.
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Aalmuhammed itself provides a useful illustration of the
distinction. There, the plaintiff wrote certain passages and
scenes that appeared in a movie. Aalmuhammed 202 F.3d at 1231-32.
The court found that the parties all intended for the plaintiffs
contributions to be merged into independent parts of the movie as a
whole. Id. at 1332. That intent, however, had no bearing on
whether the parties intended the contributing plaintiff to be an
author of the film. Id. at 1232-35. Applying the control,
audience appeal, and intent factors described above, the
Aalmuhammed court ultimately determined that, despite the parties
intent to merge their independent contributions, the parties did
not intend for the plaintiff to be a co-author of the movie and the
plaintiff was not an author of the film. Id. at 1235.
Skechers evidence that the parties here intended Reinsdorfs
photos to be merged with Skechers digital alterations and
additions therefore does not resolve the authorship issue. Indeed,
the parties behaved in ways uncharacteristic of joint authors.
Perhaps most importantly, Reinsdorf charged Skechers thousands of
dollars for his work. Not only did Reinsdorf charge for his time
and effort, but also for usage of the photographs. (Declaration
of Robert Heller in Opposition to Motion, Ex. 11.) Reinsdorf also
attempted to limit Skechers use of its ads by including temporally
and geographically restricting language in his invoices to
Skechers. Skechers, for its part, also sought to prevent Reinsdorf
from making use of the finished images on his personal website,
even during the pendency of this suit. (Briggs Dec., Ex. 46.)
A party intending to jointly produce a finished work generally
would not require payment from a co-author or, conversely, would
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not agree to pay for a purported co-authors contribution. More
importantly, a co-author would not attempt to constrain an intended
co-authors use of a collaborative work. Other courts have come to
similar conclusions under similar circumstances. In Tang v.
Putruss, 521 F. Supp. 2d 600 (E.D. Mich. 2007), for example, a
contract between a photographer and a purported co-author required
that the second party pay the photographer money before using the
photographers photos. Id. at 607. The court found such a
provision inconsistent with an intent to be joint authors. Id.
The court in Robinson v.Buy-Rite Jewelery, Inc., No. 03 CIV
3619(DC), 2004 WL 1878781 (S.D.N.Y. Aug. 23, 2004), addressed
circumstances similar to, but critically different from, those
here. In Robinson, as here, a photographer was hired for a fashion
shoot, and yielded all subsequent decision-making authority as to
how the photos would be used. Id. at *3. Unlike here, however,
the photographer agreed that the other contracting party could use
the photographs without limitation. Id. Relying on this
critical fact, the court concluded that the parties did intend to
be joint authors. Id.
This courts analysis of the three Aalmuhammed authorship
factors indicates that Skechers finished advertisements are not
the products of multiple authors. While the control and audience
appeal factors suggest plural authorship, the parties behavior
toward one another clearly indicates a lack of intent to be joint
authors of the finished works.
C. Motions in Limine
Skechers seeks to exclude the testimony of Plaintiffs experts
Frank Luntz and Jamie Turner. Under Federal Rule of Evidence 702,
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28 3 Luntz did not keep any records of this research. (Id.)
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an expert witness may offer opinion testimony if 1) that
specialized knowledge will aid the trier of fact, 2) the testimony
is based on sufficient information, 3) the testimony is the product
of reliable methods, and 4) the expert has properly applied those
methods to the facts of the particular case. Fed. R. Evid. 702.
1. Frank Luntz
Plaintiffs expert Dr. Frank Luntz (Luntz) conducted a
survey designed to test 1) whether Reinsdorfs photographs were
directly linked to the Skechers brand and 2) whether Reinsdorfs
photos influenced consumers decision to purchase a product. (Opp.
at 5.) Skechers contends that this survey was fatally flawed, in
that it was directed at an unrepresentative population, employed
improper stimuli that produced biased responses, and failed to use
adequate controls. (Mot. at 1).
Dr. Luntz surveyed an even number of men and women aged
sixteen to twenty-four, even though he knew that Skechers
customers are disproportionately female. (Decl. of Carol Scott
9; Luntz Depo. at 119). Luntz selected that age range because,
according to his research, that demographic is the meat of the
athletic wear purchaser. (Declaration of Jeffrey A. Barker 5.)3
Skechers, however, has submitted evidence that it is not an
athletic wear company, but rather a fashionable footwear
company that sells products ranging from active apparel to
dress[wear]. Luntz surveyed participants from five geographical
regions, but did not compare the distribution of participants to
the distribution of Skechers advertising and sales, nor determine
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whether the ads used in the survey had actually been displayed in
those regions. ((Luntz Deposition at 113-15.)
Luntz attempted to evaluate the link between Reinsdorfs
photos and Skechers brand by showing survey participants an image,
then asking which company the image was promoting. (Luntz Depo.,
Ex. 511.) Respondents had to choose between Skechers, Adidas,
Converse, Nike, and Reebok. (Id.) There was no I dont know
option. (Id.) As Luntz later acknowledged, all options other than
Skechers are principally athletic apparel companies. (Luntz Depo.
at 172-73.) As described above, Skechers sells a broad range of
products, including dress apparel. Skechers argues, therefore,
that the survey format produced biased, unreliable results.
(Barker Dec. 6.)
For example, at question 10, participants were shown an image
of a woman in heavy makeup, tight, shiny, purple leather pants, a
revealing top, and raised-heel, strapped, polka dot shoes. (Luntz
Depo., Ex. 511). Survey respondents were then asked whether the
image promoted Adidas, Converse, Nike, Reebok, or Skechers. (Luntz
Depo., Ex. 511). Question 11, in contrast, poses the same brand-
identification inquiry with respect to an image of a baseball
player on a baseball field, in uniform and batting helmet, lifting
a weighted baseball bat. (Id.) The survey is replete with other
examples of Skechers ads featuring models in leather jackets and
jewelry staring straight into the camera, as well as non-Skechers
ads featuring action and sports scenes. (Id.) Later in the
survey, respondents were presented with the same ads, from all five
companies, side-by-side, then specifically asked to identify which
of the five ads (disco girl with sunglasses, baseball player,
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gymnast, etc) was a Skechers ad. (Id.) Skechers argues that the
obvious differences between Skechers fashionable ads and the
other companies athletic-themed ads skewed identifications toward
Skechers, and render the Luntz fundamentally flawed.
Lastly, Skechers contends that the Luntz survey failed to use
adequate controls. (Mot. at 11-12.) Survey participants were not
shown any ads that did not contain any Reinsdorf images, nor were
they shown any unaltered Reinsdorf images. Instead, respondents
were only shown images containing both Reinsdorfs photographs and
alterations and enhancements made by Skechers. Participants were
never asked why they associated a particular ad with Skechers.
Absent any controls, such as ads containing photos other than
Reinsdorfs or Reinsdorfs unaltered photos, Skechers argues, the
survey provides no basis upon which to conclude that Reinsdorfs
photos are the motivating force behind consumers association of
the ads in question with Skechers brand.
Reinsdorf makes virtually no attempt to defend Luntzs
methods. Instead, Reindsdorf contends that Skechers has merely
nitpicked the Luntz survey, and that any questions regarding the
surveys technical reliability is a question of weight to be
determined at trial. (Opp. at 1, 5); see E. & J. Gallo Winery v.
Gallo Cattle Co., 967 F.2d 1280, 1292 (9th Cir. 1992). The first
step in the courts analysis of any survey, however, is to
determine whether the survey is admissible, relevant, and conducted
according to accepted principles. Clicks Billiards, Inc. v.
Sixshooters, Inc., 251 F.3d 1252, 1263 (9th Cir. 2001). The court
must, therefore, determine whether a preponderance of the evidence
establishes that the reasoning or methodology underlying expert
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284 The court further notes that Reinsdorf did not comply with
(continued...)
16
testimony is scientifically valid. Daubert v. Merrell Dow Pharms.,
Inc., 509 U.S. 579, 593 (1993). Unless survey evidence is
conducted according to accepted principles, it is not admissible in
the first instance. Fortune Dynamic, Inc. v. Victorias Secret
Stores Brand Mgmt, Inc., 618 F.3d 1025, 1036 (9th Cir. 2010).
Here, the preponderance of the evidence indicates that the
Luntz survey was not conducted according to accepted scientific
principles. Luntz did not identify any basis, save for his own
undocumented research, for selecting the survey population that he
used. There is no indication that the survey population had any
relationship to the relevant population of Skechers consumers.
Skechers fashion-focused ads were presented alongside obviously
distinctive sportswear ads in closed-ended brand identification
questions. Furthermore, though the survey purported to examine the
role that Reinsdorfs photos played in consumers association of
certain ads with Skechers brand, the survey did not include any
controls or basis for comparison.
These inadequacies speak not merely to the weight that should
be accorded to the survey, but rather to the fundamental
reliability of Luntzs approach. Reinsdorf does not identify any
scientific principles underlying the Luntz survey, which appears to
violate numerous accepted practices in the field of survey
research. (Scott Dec. 24-25, 31; Shari S. Diamond, Reference
Guide on Survey Research, REFERENCE MANUAL ON SCIENTIFIC EVIDENCE
373-408 (Fed. Judicial Center 3d ed. 2011). Accordingly, Skechers
Motion to Exclude Luntzs testimony and report is GRANTED.4
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4(...continued)the Magistrate Judges order regarding the production of raw datafrom the Luntz survey. Though Reinsdorf eventually produced thedata, it did so after the expiration of the deadline set by theMagistrate Judge and after the filing of the instant motion.Nevertheless, Skechers does not appear to have been undulyprejudiced by the late production.
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2. Jamie Turner
A copyright owner is entitled to recover any profits of [an]
infringer that are attributable to the infringement. 17 U.S.C.
504(b). Recoverable profits include an infringers indirect
profits, which generally arise when an infringer uses a
copyrighted work to sell another product. Garcia v. Coleman, No.
C-07-2279 EMC, 2009 WL 799393 at *2-3 (N.D. Cal. Mar. 24, 2009)
(citing Polar Bear Prods. v. Timex Corp., 384 F.3d 700 (9th Cir.
2004)). Because only those profits attributable to the
infringement are recoverable under the Copyright Act, a causal
link between the infringement and the monetary remedy sought is a
predicate to recovery of any kind. Polar Bear, 384 F.3d at 708.
It is the plaintiffs burden to establish a non-speculative
causal connection between an infringement and the infringers
profits. Id. at 708, 711; Mackie v. Rieser, 296 F.3d 909, 914-16
(9th Cir. 2002). A plaintiff cannot merely present an infringers
gross revenue, but rather must identify a particular revenue stream
that bears a legally sufficient relationship to the infringement.
Polar Bear, 383 F.3d at 711.
Reinsdorf seeks to introduce the testimony of Jamie Turner to
establish the amount of Skechers profits attributable to Skechers
use of Reinsdorfs photographs. Turner summarized his analysis as
follows:
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5 The court does not consider Turners newly profferedopinion, submitted as an opposition to Skechers Motion in Limine.See Fed. R. Civ. P. 37(c)(1). Even if the court were to considerTurners declaration, the result here would not change. The
(continued...)
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1. [W]e can broadly conclude that more than 0% butless than 100% of the net profits generated bySkechers during this period can be attributableto Mr. Reinsdorfs brand imagery.
2. We know there was already some value to Skechers[sic] brand . . . so it is safe to assume that
Mr. Reinsdorfs images are worth less than 100%of the net profits . . . .3. [W]e know that Mr. Reinsdorfs brand imagery was
used around the globe . . . .4. We also know that this brand imagery was a
foundational element of the marketing program .. . .
5. [W]e know that the residual value of the brandimagery will continue for approximately fiveyears . . . .
6. Therefore, based on the above facts and based onmy experiences working with brands such as TheCoca Cola Company, AT&T and CNN . . ., it is
reasonable to conclude that the value that Mr.Reinsdorfs copyrighted brand images contributedto the net profits for the corporation fallsomewhere between 50% and 75% of the net profits. . . .
(Turner Report at 14-15.)
Turners entire contribution to this dispute essentially
amounts to, I have a lot of experience with brands and marketing,
therefore I can divine that 50-75% of this large, successful,
companys profits come from Reinsdorfs photographs. This
analysis identifies no causal link, let alone a non-speculative
connection, between Skechers alleged infringement and any
particular revenue stream. Turner somehow settles upon an indirect
profits figure between $161 million and $241.1 million without any
specific data or discernible methodology, and in reliance on such
facts as it is safe to assume that Mr. Reinsdorfs images are
worth less than 100% of the net profits.5 Turners opinion is not
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5(...continued)declaration is internally inconsistent, referring at one point tofinancial reports from 2007 through 2009 and elsewhere to reportsspanning from 2008 to 2010, and purports to rely on other late-filed declarations that conflict with Turners statements andconclusions.
6 While the court has sustained Skechers objection toTurners newly-filed expert opinion, Skechers presented thatobjection in combination with a purported motion to strike thesupplemental report of David Connelly. (Dkt. No. 185). Reinsdorfdid not oppose the motion, and the issue was not raised at oral
argument. Though the docket indicates that that motion was takenunder submission, the Motion to Strike was untimely filed. C.D.Cal. L.R. 6-1. Insofar as it regards David Connelly, the Motion isVACATED. Skechers remains free to file a Motion in Limineregarding the supplemental Connelly report.
7 Having concluded that Turners opinion is inadmissible forfailure to apply reliable methods and rely upon sufficientinformation, the court does not address Skechers contention thatTurner is not qualified to present expert testimony.
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based upon sufficient facts and is not the product of reliable
methods. Because Turners opinion fails to illustrate a
relationship of any kind between infringing conduct and specific
income, it cannot serve as a basis for granting Reinsdorf Skechers
indirect profits. Skechers motion to exclude Turners testimony is
GRANTED.67
D. Remaining Issues
Skechers also argues that it is entitled to summary judgment
because the invoices Reinsdorf sent to Skechers are not copyright
licenses as a matter of law. Skechers correctly points out that
Reinsdorfs declaration with respect to this issue contradicts his
earlier admissions. The complaint alleges that Reinsdorf entered
into a series of written license agreements with Skechers for its
exclusive use of his photos . . . . (Compl. 55.) In February
2012, Reinsdorf confirmed that the facts asserted in his complaint
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8 Though Skechers suggests that it is entitled to summaryjudgment if there was no license, the basis for this contention isunclear.
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were accurate to the best of his knowledge. (Reinsdorf Depo. at
16:14-16.)
Three months later, however, over two months after the
deadline to make changes to the deposition transcript, Reinsdorf
purported to completely change his answer to Skechers did not
actually get exclusive use of the pictures. (Supplemental Dec. of
Robert Welsh, Ex. 6.) Reinsdorf has not provided any explanation
for the untimely reversal. Reinsdorf also now states in opposition
to the instant motion for summary judgment that he never granted
Skechers an exclusive right to use my photographs. (Reinsdorf
Dec. at 17.) A party may not, however, create an issue of fact by
contradicting prior deposition testimony. Van Asdale v. Intl Game
Tech., 577 F.3d 989, 998 (9th Cir. 2009). The court finds that
there is a clear inconsistency between Reinsdorfs initial
testimony, in which he confirmed the complaints allegation that he
granted Skechers an exclusive license, and his later untimely
correction and declaration that he did not grant Skechers an
exclusive license. Reinsdorfs subsequent affidavit is a sham, and
is thereby stricken. Id.
Beyond holding Reinsdorf to his initial assertion, however,
the court expresses no opinion regarding the existence of a
copyright license. Having determined that the finished
advertisements are not joint works, it is unclear to the court
whether Skechers license argument remains relevant.8 With respect
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to the license issue, Skechers Motion for Summary Judgment is
therefore DENIED without prejudice.
IV. Conclusion
Skechers has not demonstrated that the parties intended to be
co-authors of the finished marketing images, which are, therefore,
not joint works. In light of that determination, it is unclear
whether Skechers license argument remains relvant. Accordingly,
Skechers Motion for Summary Judgment is DENIED.
The expert opinions of Frank Luntz and Jamie Turner do not
satisfy the requirements of Federal Rule of Evidence 702.
Accordingly, Skechers Motions in Limine to exclude those opinions
are GRANTED.
IT IS SO ORDERED.
Dated:October 9, 2012DEAN D. PREGERSONUnited States District Judge